Motorola: Inventor’s Ex-Spouse’s Co-Owns the Patent-in-Suit

In the matter pending in the Western District of Texas, Katrinecz, et al. v. Motorola Mobility LLC, Motorola moved to dismiss the complaint for lack of subject matter jurisdiction. In its complaint, the plaintiffs alleged that Motorola infringed U.S. Patent No. 7,284,872 entitled “Low power, low cost illuminated keyboards and keypads.” The ‘872 patent lists Plaintiffs Katrinecz and Byrd as the inventors. In April 1997, the plaintiffs conceived of a keyboard invention and during the summer of 1997 they developed prototypes. In October 1997, they engaged attorneys and filed their first patent application for the invention on August 26, 1998.

During this time, on August 11, 1998, Katrinecz and his spouse executed a Marital Settlement Agreement dissolving their nine-year marriage. The Florida State court rendered a Final Judgment Dissolving Marriage on September 17, 1998. Motorola contended that the invention of the ‘872 patent was developed during the marriage and thus should be considered personal property subject to equitable distribution upon dissolution of the marriage. Motorola further asserted that “when a marital settlement agreement fails to address personal property, that property is co-owned by both spouses by operation of law upon entry of final judgment dissolving the marriage.” Consequently, because the Agreement did not expressly address the disposition of the rights to the invention, Motorola argued that the rights became co-owned by the inventor and his ex-spouse upon entry of the final judgment on September 17, 1998. Because the ex-spouse co-owned the patent when it issued and because she was not a party to the action, the court lacks subject matter jurisdiction and must dismiss the case.
The plaintiffs responded that there were no patent rights to the invention to be distributed as a marital asset at the time of the Agreement and, even if there were patent rights subject to distribution, based on the terms of the Agreement those rights were conveyed to the inventor.

Court began by reiterating well-established Federal Circuit law that all joint owners must join all other co-owners to establish standing to bring an infringement action. Otherwise, “if ownership in a patent is divided, one co-owner has the right to limit all other co-owners’ abilty to sue an infringer by refusing to voluntarily join in an infringement action; generally, an unwilling co-owner cannot be forced to join an infringement action.” Slip Op. at 4 (citing STC. UNM v. Intel Corp., 754 F.3d 940, 946 (Fed. Cir. 2014)).

After finding that Florida law applies to the Divorce Agreement and Final Judgment, the court noted that Florida law requires a court to equitably distribute all marital assets between a husband and a wife. Marital assets include assets acquired and liabilities incurred during the marriage, individually by either spouse or jointly by them. The date for determining what is a martial asset subject to division at divorce is “the earliest of the date the parties enter into a valid separation agreement, such other date as may be expressly established by such agreement, or the date of the filing of a petition for dissolution of marriage.”

Applying Florida law to the facts of this case, the court determined that the inventor retained sole possession of the keyboard invention:

As of August 11, 1998 [the date when the Divorce Agreement was executed], all aspects of Katrinecz’s work on the invention were in Katrinecz’s sole possession. Further, the court finds that any marital asset associated with the keyboard invention and whatever other personal property that existed and would lead to the ‘872 Patent was in Katrinecz’s sole possession at the time of the Agreement. Therefore, by the terms of the Agreement, all such property was conveyed to Katrinecz. Further, based on the explicit language in the Agreement, the parties had distributed all of their marital assets; nothing remained undivided.

As the patent application leading to the ‘872 Patent was filed [on August 26, 1998] after Katrinecz and Cothern executed the Agreement [on August 11], and, by virtue of the Agreement, Katrinecz had and retained sole possession of all marital assets related to the keyboard invention or leading up to the ‘872 Patent, and, as there were no marital assets related in any way to the ‘872 Patent remaining undivided after Katrinecz and Cothern’s divorce, the court concludes that, as alleged in the First Amended Complaint, Katrinecz and Byrd together “own all right, title, and interest in the ‘872 Patent.” This court has subject-matter jurisdiction over Katrinecz and Byrd’s infringement claims alleged against Motorola in this action.

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This decision highlights the intersection of property law and patent rights. This case illustrates that it is important to consider whether an inventor’s ex-spouse acquired and retained any rights in the invention. As a defendant, a party not only may be able to have the case dismissed for lack of standing, but also may be able to acquire the ex-spouse’s interest in the patent-in-suit and thereby immunize itself from any infringement allegations. As a plaintiff, the patent owner will want to confirm that it has sufficient rights in the patent to establish standing to assert a claim for infringement and thus its pre-suit analysis should consider the effect of any inventor’s divorce proceedings. Katrinecz, et al. v. Motorola Mobility LLC, Case No. A-12-CA-00235-LY, Docket No. 86 (W.D. Tex. Nov. 7, 2014) (J. Yeakel)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com.

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com.

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com.

Andrew Shadoff, is a litigation associate who has assisted in prosecuting and defending patent infringement lawsuits involving mechanical devices. He has drafted successful summary judgment motions and pretrial motions in limine, and has assisted with trial and witness preparation. Contact him at 310.712.6856 or AShadoff@jmbm.com.

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.

Rachel Capoccia

Rachel Capoccia focuses on technology-based litigation and counseling, with an emphasis on patent litigation, copyright litigation and other technology-related matters. Her legal experience is complemented by 10 years working at IBM as a software engineer before law school, during which she led a team of engineers who developed computer graphics software and computer aided design systems. She represents clients in all phases of patent infringement matters involving diverse areas of technology. Contact Rachel at 310.201.3521 or RCapoccia@jmbm.com.

Jessica Newman is a litigation associate, and a member of JMBM's Patent Litigation Group. She is involved in all aspects of litigation and has assisted in representing clients in a variety of industries with regards to patent infringement and copyright infringement issues. Contact her at 310.785.5372 or JNewman@jmbm.com.